European Trademark Reform Approved by European Parliament

On December 15, 2015, the European Parliament adopted a "package" of two documents relating to trademark reform: a Directive and a Regulation. (We have already covered the content of the reform package in "The European Trademark Reform: Key Changes Brand Owners Need to Know," C&M Client Alert, July 2015). This package will definitely strengthen the system and allow better protection for right holders’ brands and their reputation. It will make registering trademarks "cheaper, quicker and more reliable," said the Parliament.

Following the European Parliament vote, the legislative process is now over. The "package" will soon be published in the Official Journal of the European Union. The Directive and the Regulation will enter into force on the 20th and 90th day, respectively, following the day of publication.

One of the key changes affecting brand owners concerns the designation and classification of goods and services for the purpose of registering trademarks. It will no longer be possible to simply use Class Headings to cover all goods and services that fall within that class. Instead, brand owners will need to specify the particular goods and services for which registration is sought. Brand owners who applied for Community trademarks before June 22, 2012 and whose trademarks cover an entire Nice Class Heading will have six months to specify which goods or services from the Nice alphabetical list they intended their trademark to cover. The new rules will also provide better means to fight against counterfeit/infringing goods in transit through EU territory.

Brand owners should take these new rules into account and focus on the key changes with regard to their existing and planned European trademarks.